Ex Parte Hornbach et al

Patent Trial and Appeal BoardJun 14, 2016

12701042 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121701,042 02/05/2010 63565 7590 06/14/2016 HILL-ROM SERVICES, INC. Legal Dept., Mail Code K04 1069 State Road 46 East BATESVILLE, IN 47006 FIRST NAMED INVENTOR David W. Rombach UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. Nl-19772 9183 EXAMINER SOSNOWSKI, DAVIDE ART UNIT PAPER NUMBER 3673 MAILDATE DELIVERY MODE 06/14/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID W. HORNBACH, RICHARD H. HEIMBROCK, JONATHAN D. TURNER, STEPHEN HUTCHISON, and JOSEPH A. ERNST Appeal2014-004060 Application 12/701,042 Technology Center 3600 Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and TARA L. HUTCHINGS, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 28-35, 37, 44, 45, 47, and 48. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appellants identify the real party in interest as "Hill-Rom Services, Inc." (Appeal Br. 1.) Appeal2014-004060 Application 12/701,042 STATEMENT OF THE CASE The Appellants' invention "relates to a multi-functional unit capable of serving as a bed siderail and as an over-bed table." (Spec. i-f 1.) Illustrative Claim2 28. A patient support apparatus comprising: a frame; a deck supported by the frame; and a siderail comprising a table portion movable between a table position in which the table portion extends generally horizontally over at least a portion of the deck and is spaced from the deck, and a siderail position in which the table portion extends generally vertically along at least a portion of a side of the deck. Rejection3 The Examiner rejects claims 28-35, 37, 44, 45, 47, and 48 under 35 U.S.C. Â§ 102(b) as anticipated by Spallholtz.4 (Final Action 7.) ANALYSIS Independent claim 28 (the sole independent claim on appeal) requires "a table portion" that is movable to "a siderail position in which the table portion extends generally vertically along at least a portion of a side of [a] deck." (Appeal Br., Claims App.) The Examiner finds Spallholtz discloses 2 This illustrative claim is quoted from the Claims Appendix set forth on pages 31-36 of the Appeal Brief. 3 The Examiner's rejection of claims 28--48 under 35 U.S.C. Â§ 112 (see Final Action 2---6) and the Examiner's rejection of claims 38--42 and 46 under 35 U.S.C. Â§ 102(b) (see id. at 7, 10-12) have been withdrawn (see Answer 2). 4 US 5,035,464, issued July 30, 1991. 2 Appeal2014-004060 Application 12/701,042 a couch having a table portion 11 which is movable to such a siderail position. (See Final Action 7-8.) According to the Examiner, the cushions of Spallholtz's couch constitute a "deck," and Spallholtz's Figure 3 (reproduced below) shows table portion 11 extending generally vertically along at least a portion of a side of this deck. (See Answer 5.) 13 FIG. 3 Spallholtz' s Figure 3 depicts table portion 11 in a vertical orientation, situated next to an arm of the couch, and located anteriorly outward from the front edge of the adjacent couch cushion. The Appellants argue that the table position shown in Spallholtz's Figure 3 is not a siderail position as required by independent claim 28. (See Appeal Br. 15.) We are persuaded by this argument because we agree with the Appellants that one of ordinary skill in the art, upon reading the Specification, would not view Spallholtz's Figure 3 as showing table portion 11 in a siderail position in which it extends generally vertically along 3 Appeal2014-004060 Application 12/701,042 at least a portion of a side of the adjacent couch cushion (i.e., the deck). 5 The claimed siderail position would require, for example, Spallholtz' s table portion 11 to extend along at least a portion of an edge of the adjacent couch cushion, as opposed to being situated outwardly therefrom. Thus, we do not sustain the Examiner's rejection of independent claim 28, and the claims depending therefrom, 6 as anticipated by Spallholtz. DECISION We REVERSE the Examiner's rejection of claims 28-35, 37, 44, 45, 47, and 48. REVERSED 5 We interpret independent claim 28 by giving the terms thereof the broadest reasonable interpretation in context consistent with the Specification as it would be interpreted by one of ordinary skill in the art. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259---60 (Fed. Cir. 2010); In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997); and In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). 6 The Examiner's further findings with respect to the dependent claims (see Final Action 8-13) do not compensate for Spallholtz's shortcoming in this regard. 4